Ex Parte Rubbia

Board of Patent Appeals and Interferences

Sep 20, 2006

09446144 (B.P.A.I. Sep. 20, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARLO RUBBIA
____________

Appeal No. 2006-1812
Application No. 09/446,144
____________

ON BRIEF
____________

Before OWENS, CRAWFORD, and FETTING, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 9,
12, 17 to 25, 28, 31 and 32. Claims 10, 11, 13 to 16, 26, 27, 29, 30 and 33 to 48 have
been withdrawn from consideration.

Appeal No. 2006-1812
Application No. 09/446,144

Παγε 2
The appellant's invention relates to a method of element transmutation by
neutron capture of an initial father isotope, embedded in a diffusing medium which is
highly transparent to neutrons (specification, p. 1). A copy of the claims under appeal
is set forth in the appendix to the appellant's brief.
THE PRIOR ART
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Borst 3,197,375 Jul. 27, 1965
Ruddock 4,123,497 Oct. 31, 1978
Bowman 5,160,696 Nov. 3, 1992
Glasstone, Samuel, “Principles of Nuclear Reactor Engineering”, D. Van Nostrand
Company, Inc., pgs. 87-89, first ed. (July 1955).

National Research Council Conference on Glossary of Terms in Nuclear Science and
Technology, “A Glossary of Terms in Nuclear Science and Technology”, pg. 177 (1957).

THE REJECTIONS
Claims 1 to 9, 12, 17 to 25, 28 and 31 to 32 stand rejected under 35 U.S.C.
§ 112, first paragraph, because the specification does not enable a person to make and
use the invention.
Claims 1 to 9, 12, 17 to 25, 28, 31 and 32 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
Claims 1 to 9, 12, 17 to 20, 23 to 25 and 28 stand rejected under 35 U.S.C.
Appeal No. 2006-1812
Application No. 09/446,144

Παγε 3
§ 102(b) as being anticipated by Bowman.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Bowman in view of Borst.
Claims 31 and 32 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Bowman in view of Ruddock.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(mailed December 2, 2005) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed September 19, 2005) for the appellant's arguments
thereagainst.

OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
It is appropriate to review the rejection under the second paragraph of 35 U.S.C.
§ 112 before we review the rejection under the first paragraph of 35 U.S.C. § 112,
because the analysis of the claims under the first paragraph of 35 U.S.C.
Appeal No. 2006-1812
Application No. 09/446,144

Παγε 4
§ 112 requires one to have determined exactly what subject matter the claims
encompass under the second paragraph of 35 U.S.C. § 112. See In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).

Indefiniteness Rejection
The second paragraph of 35 U.S.C. § 112 requires claims define the metes and bounds
of the claimed invention with a reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977); See In re Venezia,
530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976). In making this determination,
the definiteness of the language employed in the claims must be analyzed, not in a
vacuum, but always in light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art. Id.
Claim 1 of the instant application recites a method which includes the step of :
providing a neutron-diffusing medium around a neutron source, wherein
the diffusing medium is substantially transparent to neutrons and includes
an inner buffer region

Appellant's specification defines transparency as:
Transparency is meant as the property of a medium in which neutrons
undergo mostly elastic scattering [specification at page 2][emphasis
added].

The examiner states:
Appeal No. 2006-1812
Application No. 09/446,144

Παγε 5

. . . there is no standard set forth by applicant what constitutes mostly
elastic scattering, i.e., 2/3, 5/8, 3/4, etc.[final rejection at page 3]

Mostly only involves greater than ½. However, no standard is set forth by
Appellant [answer at page 12].

Appellant's argue that the term "mostly" means more than half as the plain
meaning of the term clearly suggests.
Claim 1 recites that the diffusing medium is substantially transparent. Appellant's
specification does not provide any guidance as to what might constitute a medium that
is substantially transparent and it does not appear to us that this claim language has
any clear meaning when read in light of the originally filed specification. In fact, as
pointed out by the examiner, it is unclear what is meant by the term transparency in that
the specification defines transparency as a property of a medium in which neutrons
undergo mostly elastic scattering. When the claim language of a "substantially
transparent" medium is considered in light of the definition of transparency in the
specification of being a property of a medium in which neutrons undergo "mostly elastic
scattering," it is our opinion that the claims fail to define the metes and bounds of the
claimed invention with a reasonable degree of precision and particularity. Therefore, we
will sustain this rejection as it is directed to claim 1 and claims 2 to 9 and 12 dependent
thereon. We will likewise sustain this rejection as
it is directed to claim 17 and claims 18 to 25, 28, 31 and 32 dependent thereon because
claim 17 also recites the medium is substantially transparent.
Appeal No. 2006-1812
Application No. 09/446,144

Παγε 6

Enablement Rejection
We will not sustain the examiner's rejection of claims 1 to 9, 12, 17 to 25, 28, 31
and 32 under 35 U.S.C. § 112, first paragraph. While we might speculate as to what is
meant by the claim language, our uncertainty provides us with no proper basis for
making the enablement determination that we are obliged to do. Enablement rejections
under 35 U.S.C. § 112, first paragraph, should not be based upon considerable
speculation as to the meaning of terms employed and assumptions as to scope of the
claims. See In re Moore, 439 F.2d at 1235, 169 USPQ at 238.

Prior Art Rejections
We will also not sustain the examiner's prior art rejections of claims 1 to 9, 12, 17
to 20, 23 to 25 and 28 under 35 U.S.C. § 102(b) and of claims 21 to 22, 31, and 32
under 35 U.S.C. § 103. As we held above, no reasonably definite meaning can be
ascribed to the language appearing in the claims regarding a medium that is

"substantially transparent". As the court in In re Wilson, 424 F.2d 1382, 165 USPQ 494
(CCPA 1970) stated:
All words in a claim must be considered in judging the patentability of that claim
against the prior art. If no reasonably definite meaning can be ascribed to certain
Appeal No. 2006-1812
Application No. 09/446,144

Παγε 7
terms in the claim, the subject matter does not become obvious --the claim
becomes indefinite.

In comparing the claimed subject matter with the applied prior art, it is apparent
to us that considerable speculations and assumptions are necessary in order to
determine what in fact is being claimed. Since a rejection based on prior art cannot be
based on speculations and assumptions, see In re Steele, 305 F.2d 859, 862, 134
USPQ 292, 295 (CCPA 1962), we are constrained to reverse, pro forma, the above-
noted rejections under 35 U.S.C. §§ 102(b) and 103. We hasten to add that this
reversal is not based upon the merits of the rejections.

Appeal No. 2006-1812
Application No. 09/446,144

Παγε 8
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )
Appeal No. 2006-1812
Application No. 09/446,144

Παγε 9
Patzik, Frank & Samotny, LTD.
150 South Wacker Drive
Suite 900
Chicago, IL 60606

MEC/ki

Comment [jvn1]: Type address